Brexit and Brands – 266 days and counting, and then at least another 642 days (no, really)

Following on the earlier Br*x*t and Brands posts here and here, Katfriend Darren Meale (Simmons&Simmons) is back with his third update.

Here’s what Darren writes:

“Brexit is boring!” exclaimed Mr Justice Birss at the IPKat’s 15^th birthday extravaganza earlier this week. Sigh, never a truer word said. But – it can’t be ignored. As it has been about 270 days since I last wrote on this topic, here is where things stand.

On 19 March 2018 a draft of the withdrawal agreement was published with a degree of green highlighting which indicates which parts of it the UK government has conceded agreed to. You’ll find it here. Most of the bits relevant to IP are at Articles 50 through 57. Save in respect of SPCs, as far as I know there’s not been any publicly reported progress since that document, the key aspects of which you’ll find detailed below.

Some dates for your diary

• Friday 29 March 2019 – this is B-Day, we’ll be out of the EU. Except that, (probably) not really…
• 31 December 2020 – because we’ll probably be in a “transition” period until this date, unless it gets extended. It looks like for the duration of this period we will in essence still be in the EU trade mark and RCD system, although the detail of what being “in” means remains to be explained. Of course, the transition period depends on a full withdrawal treaty being agreed and ratified before B-Day. If that doesn’t happen, no transition period.
• 30 September 2021 – this is currently down as the re-filing date for pending applications as of the end of the transition period. More on this below.

Articles 50+52+54: Cloning, cloning, cloning, keep those trade marks cloning (Rawhide?)

It looks like division of EUTMs and the likes – or cloning as the UKIPO calls it – is all but agreed. CITMA has called this the “Montenegro” model.

The upshot is that if you have a registered EUTM or an RCD at the end of the transition period, then on the next day you will have (for example) both a registered EUTM and a registered UKTM. Save for their territorial coverage, the rights are intended to be identical – same priority/filing dates, same registration and renewal dates, and so on.

This is agreed for International and Hague system registrations, database rights, plant variety rights but not yet for any geographical indications, designations of origin or traditional specialities. My suspicion is that this is an area in which the UK government thinks it has leverage, so it is holding out.

If at the end of the transition period a registration is under attack (eg, for non-use) it will be cloned but if it then falls at the EU level it will also fall at the UK level (unless the basis of cancellation does not apply in the UK).

The position as regards what will count as genuine use of a cloned mark and its parent and how one establishes whether those marks have a reputation appears to be being dealt with in a sensible way – the clones inheriting the status of their parents for the period up to B-Day and thereafter being judged on a national basis. That said, the current drafting needs some work before we’ll know precisely how this will operate.

I may have missed it in the agreement, but if all of this takes place at the end of the transition period, it must be the case that for the duration of the two years the status quo is preserved – hopefully that is also the case as regards procedure and the standing of UK lawyers to act at and before EU institutions like the EUIPO (ie, what we do and how we do it will not change until at least 2021).

Article 51: Free and Automatic for the People

It is not yet agreed that the cloning process will be free and automatic. Again, the UK government is no doubt holding out on this point because it will have to bear its cost – or rather UK taxpayers will be picking up the tab. However, it is hard to see how the process in Article 50 can work if that process is not free and automatic, particular when it is drafted in compulsory terms – rights “shall” be cloned – rather than providing for an optional procedure. Perhaps we can get a good deal on rights of representation in exchange for agreeing this point.

Article 53: A Design for Life

Big news – unregistered Community design rights will be cloned too. The new right will have to provide the “same level” of protection as the parent right, which rules out the UK relying upon its existing UK unregistered design right regime (UKUDR). UKUDR is not the same and does not offer the same level of protection. So we will be seeing a brand new design right – just when you thought design rights could not get any more complicated.

First publication issues (aka the “what about London Fashion Week?” question) will also need to be sorted out.

Article 55: Nine months to re-file

Pending applications will not be cloned, but there will be a nine month re-filing period following the end of the transition period. As it stands, that means you will have until 30 September 2021 to refile a pending EUTM, RCD or plant variety right in the UK if you wish to enjoy the same priority date as your original EU application.

A whole host of interest groups (including CITMA, Marques and the Law Society) have issued a joint statement criticising this decision. As they sensibly point out, re-filing may lead to an applicant having to deal all over again with examination issues, objections and oppositions which may have taken years and cost a fortune to deal with. Rivals will also need to remember to oppose again.

Again the drafting will need to be tightened up; Article 55 is not currently limited to pending applications, meaning it would apply to an application which has been withdrawn (even years before). That is unlikely to be intended.

Article 56: SPC

Only recently agreed, but essentially (and forgive me for not getting into the details here) the status quo will be preserved during transition and after Brexit.

Article 57: I’m exhausted (Please release me)

Goods exhausted prior to the end of the transition period will stay exhausted. Still no answer on how we work that out – perhaps we can put a “Brexit Approved!” sticker on every product to which this would apply.

No news whatsoever on what happens post-transition – that’ll be part of the fabled “future relationship”.

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What role will the CJEU play?

If there is one thing the UK government does not like, it’s the CJEU. So it is no surprise that the provisions of the agreement which provide that the CJEU will continue to have a say over what goes on during the transition period (see for examples Article 4(4), 82 and 85) are not yet agreed. Expect either a concession or a fudge at some stage – it makes little sense to be part of a legal system for another two years but able to ignore what the Court of Justice tells us about what that legal system means (if anything it is a recipe for chaos).

Some things to think about for now

There is a long way to go, but for now you should probably be thinking about at least the following:

1. Be ready for renewal of clones – if the parent EUTM was due for renewal on B-Day, so too will the clone be due for renewal.
2. Keep track of your applications in anticipation of the re-filing period (including those which may have been the subject of protracted oppositions at the EUIPO for several years).
3. If you are only filing EUTMs at present without UKTMs as a back-up, there may come a point where those back-ups would be a good idea – at some date it will be that or wait for the re-filing period.
4. On B-Day if you had 100 EUTMs and 5 UKTMs, you now have 100 EUTMs and 105 UKTMs. Do you know how your docketing and portfolio management system will handle this?
5. Whether or not you might have an Irish grandma or other relation of EU heritage who might be able to help you secure EU citizenship – plenty of Brits are working on this.

For those looking for a connection between the Blues Brothers, REM, the Manic Street Preachers and Engelbert Humperdinck, there’s none. I’m just trying to make Brexit less boring."